Ellen G. White Estate, Inc.
v.
Claim Number: FA0709001076568
PARTIES
Complainant is Ellen G. White Estate, Inc. (“Complainant”), represented by Holly
M. Ford, of Buchanan Ingersoll & Rooney PC, 1737
King Street Suite 500, Alexandria, VA 22314. Respondent is Cary Mayo c/o Calvary
Community Church (“Respondent”), represented by Michelle
M. Morris, of Perkins Coie Brown & Bain P.A.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ellenwhite.org>, registered with Godaddy.com,
Inc.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
P-E H
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 13, 2007; the
National Arbitration Forum received a hard copy of the Complaint on September 13, 2007.
On September 13, 2007, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <ellenwhite.org> domain
name is registered with Godaddy.com,
Inc. and that the Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On September 20, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 10, 2007 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@ellenwhite.org by
e-mail.
A timely Response was received and determined to be complete on October 10, 2007.
A timely Additional Submission was received from Complainant in
accordance with the Forum’s Supplemental Rule 7.
A timely Additional Submission was received from Respondent in
accordance with the Forum’s Supplemental Rule 7.
On October 19, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed P-E H
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant
is the owner of the
The Complainant states that the disputed domain name is virtually identical and confusingly similar to Complainant’s trademark, as the deletion of the middle initial “G.” and the addition of the “.org” TLD do not create a distinct mark capable of overcoming a claim of identical or confusing similarity. In addition, the full ELLEN G. WHITE mark is used throughout Respondent’s web site, so the deletion of the “G.” from the domain name will not reduce the likelihood of confusion.
The Complainant claims to have spent considerable time and money advertising and marketing its products and services bearing the ELLEN G. WHITE mark and to have built up a significant amount of consumer recognition and goodwill in the said trademark. Complainant has also registered several domain names in relation to the mark, including <ellenwhite.com>, which currently redirects to the official web site of Complainant.
The Complainant informs that Respondent’s predecessor in interest registered the domain name <ellenwhite.org> on August 13, 1997, over 20 years after Complainant began use of its ELLEN G. WHITE mark.
The Complainant argues that Respondent has no rights or legitimate interests with respect to the domain name, as:
i)
the domain name is not used in
connection with a bona fide offering
of goods or services. The web site at
the <ellenwhite.org> domain
name contains a collection of links and articles criticizing Ellen G. White and
the
ii) there is no evidence that Respondent has ever used or been known by the names “Ellen White” or “Ellen G. White.”
iii) Respondent’s use of the <ellenwhite.org> domain name does not constitute a legitimate, noncommercial fair use, as the connecting web site is commercial in nature – soliciting donations in support of Respondent’s activities, stating that “for a suggested donation of $25.00 or more you may choose any one of the books about Ellen White . . . as our way of saying thank you” – and Respondent, by using Complainant’s trademark as a domain name is creating confusion among Internet users seeking the official web site of the Complainant.
The Complainant concludes that it is clear that Respondent is using the fame and recognition of the ELLEN G. WHITE name and mark to misleadingly divert Internet users to its own website in an attempt to tarnish the goodwill associated with Complainant’s name and mark and the Respondent clearly had actual knowledge of Complainant’s rights in the mark prior to registering the domain name.
B. Respondent
The Respondent denies that the disputed
domain name is identical to Complainant’s registered trademark ELLEN G. WHITE,
but acknowledges that it is similar thereto.
Respondent claims to have rights or legitimate interests in the domain name. The Respondent is making a legitimate noncommercial or fair use of the domain name, as registration and use of a criticism or information site – in this case providing information and criticism regarding the historic religious figure, Ellen White - is clearly a bona fide business activity in the sense of the Policy.
The Respondent denies that the use of <ellenwhite.org> is commercial in nature, and argues that for purposes of paragraph 4(c) of the Policy, the inquiry is not whether use of a domain name involves any commercial activity, but rather an assessment of the primary motive or intent of the domain name holder — to exercise free speech in the form of a criticism or information site, or to operate a commercial site. It is clear that some commercial activity does not transform an otherwise noncommercial site to a commercial one, particularly where the commercial activity is de minimus or ancillary to the domain name’s noncommercial purpose. Respondent also points out that the gTLD “.org” is noncommercial as such.
The Respondent points out that, according to recent UDRP cases, criticism sites may constitute noncommercial use of the domain name in issue even where the domain name itself does not communicate criticism, thereby addressing the Complainant’s allegation that the Respondent’s use of <ellenwhite.org> is likely to confuse consumers that the web site is associated with the Complainant.
The Respondent
also denies that consumers looking for the Complainant’s official site are
being diverted to Respondent’s website. Complainant
itself owns many domain names that redirect to its official site, including
<ellenwhite.com>, and a search for “Ellen White” on the Internet produces
nearly 150,000 hits. Further, it is clear, as soon as the site is accessed,
that the site is not the “official” Ellen White site, is not affiliated with
Complainant and is, in fact, critical of Ellen White. The Complainant ignores the fact that the
home page of <ellenwhite.org>
contained the following disclaimer just below the page header: “An
independent source of information about Ellen White having no affiliation with
the White Estate or the
Respondent denies having registered and used the domain name in bad faith. Respondent is just exercising its free speech right by using the domain name for a site critical of Ellen White.
A search for the name “Ellen White” on the Internet results in many thousands of hits. Such extensive third-party use indicates that the mark itself is diluted and cannot identify Complainant as the source of goods and services under the mark. As such, Respondent’s use of the domain name cannot create a likelihood of confusion.
At the time the domain name was registered in 1997, the Complainant had not yet filed a federal trademark application for the ELLEN G. WHITE mark. The Complainant offers no evidence in support of its claim for common law trademark rights.
Lastly, the Respondent claim that Complaint has waived its rights to request that the domain name be transferred, as it has been registered for 10 years and was registered prior to Complainant’s domain names for <ellenwhite.com>, <ellengwhite.com> and <ellengwhite.org>, which were registered in 1998. Complainant’s failure to act for so many years also negates any claim that the Domain Name has caused it harm.
The Respondent requests that the
Administrative Panel denies the remedy requested by the Complainant.
C. Additional Submissions
Complainant
The Complainant points out that Respondent does not dispute that Complainant has legitimate rights in the ELLEN G. WHITE trademark or that Respondent’s <ellenwhite.org> domain name is similar to Complainant’s mark.
Complainant does not dispute that the web site at the domain name “provides information and criticism” regarding Ellen G. White, or that the content of Respondent’s web site is protected speech under the First Amendment. However, Respondent’s First Amendment rights do not extend to the right to mislead Internet users by registering a domain name which is virtually identical to Complainant’s mark.
Respondent also alleges that its use of the <ellenwhite.org> domain name is not commercial in nature. As noted in the Complaint, Respondent’s web site contains a link selling books under the guise of soliciting “donations.” Respondent has not provided any information on the amount of donations received through the web site or the sales of books through the links on Respondent’s site. In the absence of such evidence, it is impossible to give any significant weight to Respondent’s contentions that the commercial activity on the <ellenwhite.org> web site is merely “de minimus.”
Respondent’s registration of the domain name is likely to cause initial interest confusion, as the domain name does not prepare consumers for the content of the site.
The
disclaimer on Respondent’s site is in a miniscule font which is barely visible
in comparison with the “Ellenwhite.org” name and picture of Ellen White at the
top of the page. Under these
circumstances, the use of a disclaimer is not sufficient to prevent confusion
and confer legitimate rights on Respondent.
Contrary to Respondent’s arguments, there is no
justification for treating “.org” domain names different from “.com” domain
names, particularly when Complainant itself is not a commercial
enterprise.
Respondent attempts to create an issue where none exists by asserting that Respondent did not have knowledge of Complainant’s rights in the ELLEN G. WHITE trademark at the time the domain name was registered, since the domain name was registered prior to Complainant’s registration of the ELLEN G. WHITE trademark. Respondent misrepresents the record by suggesting that it registered the <ellenwhite.org> domain name itself. In fact, Respondent obtained the domain name in 2006 from its previous owner Dirk Anderson, who had tried to sell the domain name to Complainant for $20,000.
Respondent clearly “knew or should have known” that Complainant owned trademark rights in the ELLEN G. WHITE mark at the time the <ellenwhite.org> domain name was registered. Complainant and its predecessors in interest have used the ELLEN G. WHITE mark on various publications since at least as early as the 1930s.
Finally, Complainant notes that Respondent has already revised the web site
at <ellenwhite.org> to contain a link to Respondent’s new web site
at <ellenwhiteexposed.com>, as well as a link to Complainant’s web site. This change, which did not occur until after
the filing of the Complaint, is further evidence that Respondent registered the
domain name in bad faith and was using the name in bad faith at the time the
Complaint was filed.
Respondent
The Respondent notes that Complainant does not dispute that its use of
the domain name in offering religious information is a bona fide use.
The Respondent argues that in case of criticism sites, the so called
“Initial Interest Confusion Rule” does not apply, and that pure criticism sites
involving US parties may even be outside the reach of the Policy. Upon viewing the content of the noncommercial
criticism site at the disputed domain name, no likelihood of confusion exists.
Finally, Respondent did not obtain the domain name from Dirk Andersson in 2006, but from an intervening owner, Blueberry LLC, in March 2007.
FINDINGS
Complainant is the owner of U.S. Registration No. 2,620,036 of September 2002, for the mark ELLEN G. WHITE in connection with goods and services in classes 16, 35, 41 and 42, all goods and services connected to Ellen G. White and/or Seventh-day Adventist origin and history.
The domain name <ellenwhite.org>, created in 1997, was registered in the name of the Respondent in March 2007.
Ellen Gould White (1827 - 1915), was an American Christian leader whose prophetic ministry was instrumental in founding the Sabbatarian Adventist movement that led to the rise of the Seventh-Day Adventist Church [source: Wikipedia]
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is being
used in bad faith.
The relevant part of the disputed domain name
is “ellenwhite.” See Gardline Surveys Ltd. v. Domain
Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The
addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly
similar, because top-level domains are a required element of every domain name.”).
Complainant has established rights
in the ELLEN G WHITE trademark in the
The Complainant also claims common law rights to the ELLEN G. WHITE
trademark from at least 1976, and to have spent considerable time and
money advertising and marketing its products and services bearing the ELLEN G.
WHITE mark, however no
evidence is filed in support of this claim. The Panel therefore concludes that the
Complainant has failed to prove common law rights to ELLEN G. WHITE.
Respondent’s domain name registration <ellenwhite.org> incorporates Complainant’s mark ELLEN G. WHITE, except for
the letter “G.” This minor amendment is insufficient to distinguish Respondent’s domain name from
Complainant’s mark.
The domain name was originally registered in 1997, which is prior to the registration date of the Complainant’s trademark. However, as stated in Digital Vision, Ltd v. Advanced Chemill Systems, D2001-0827 (WIPO Sept. 23, 2001) and other cases, Paragraph 4(a)(i) of the Policy does not require that the trademark be registered prior to the domain name. The fact that the disputed domain name predates Complainant’s trademark registration may only be relevant to the assessment of bad faith pursuant to Paragraph 4(a)(iii), which is considered below.
In addition, the domain name was – according to Respondent itself - registered in the name of the Respondent in March 2007, which is well after the registration date of the Complainant’s mark ELLEN G. WHITE.
The Panel concludes that the <ellenwhite.org> domain name is confusingly similar
to the registered trademark ELLEN G. WHITE, owned by Complainant, and
accordingly that Complainant has satisfied the requirements of Paragraph
4(a)(i) of the Policy.
The Complainant
contends that Respondent is using the <ellenwhite.org>
domain name to solicit donations and to display information to criticize the
The Panel finds that Complainant has failed to allege facts sufficient to create a prima facie case for lack of rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when the respondent does file a response, the complainant must allege facts, which if true, would establish that the respondent does not have any rights or legitimate interests in the disputed domain name).
The Complainant does not dispute that the content of Respondent’s web site is protected speech under the First Amendment, but argues that this is not a carte blanche for Respondent to use a domain name that is virtually identical to Complainant’s mark. While this Panel can sympathize with that view, and would normally be in support, a consideration of all facts and circumstances must be done:
The Complainant’s mark is the name
of a religious and historical person. Under
such circumstances, the trademark owner has to accept the co-existence of other
use of that name as long as the use is for reference, information or criticism
purposes related to the historical person, rather than strict commercial use. See Bridgestone Firestone, Inc. v. Myers,
D2000-0190 (WIPO July 6, 2000) (finding that the respondent has free speech
rights and legitimate First Amendment interests in the domain name
<bridgestone-firestone.net> where the respondent linked the domain name
to a “complaint” website about the complainant’s products).
The Respondent’s web site is not obviously commercial in nature. It can be discussed whether the soliciting of donations in exchange of a book about Ellen White makes the site more or less commercial, as argued by the Complainant. After careful consideration of all arguments from the Complainant and the Respondent, this Panel is not convinced that the intention of Respondent’s use is commercial.
Accordingly, this Panel concludes that Respondent does have legitimate interests in respect of the domain name.
Referring to the conclusion that Respondent has legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii), the Panel also concludes that Respondent did not register the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Nat. Arb. Forum Jan. 7, 2005) (“Respondent's rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), allow a finding that there was no bad faith registration or use under Policy ¶ 4(a)(iii).”); see also Pensacola Christian Coll. v. Gage, FA 101314 (Nat. Arb. Forum Dec. 12, 2001) (“Because the Panel has found that Respondent has rights and interests in respect of [sic] the domain name at issue, there is no need to decide the issue of bad faith.”).
Respondent has a First Amendment right to host a complaint website against Complainant. The disputed domain name is not identical to the Complainant’s registered trademark and the site is not intended for commercial use. See Legal & Gen. Group Plc v. Image Plus, D2002-1019 (WIPO Dec. 30, 2002) (finding initial interest confusion is displaced by the criticism content at the respondent's website and that such a "low level of confusion is . . . a price worth paying to preserve the free exchange of ideas via the Internet").
The Panel concludes that the domain name is not registered or used in bad faith.
DECISION
Complainant having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
P-E H
Dated: November 2, 2007
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